USPTO Patents Application 10008738

IN THE UNITED STATES PATENT AND TRADEMARK OFFICE

In re application of: Clark H. Gates, II

Serial No.:

Filed:

For:

Confirmation No.
Group Art Unit:
Examiner:

10/008,738
11/09/2001

Electrical Box with Recessed Faceplate

6062

3727

Joseph C. Merek

Attorney Docket No.: PGATEC-EB

Mail Stop Appeal Brief-Patents
Commissioner for Patents
P.O. Box 1450
Alexandria, VA 22313-1450

EXPRESS MAIL CERTIFICATE

Express Mail Label No. ED789765505US

Date of Deposit: June 1, 2005

I hereby certify that the following attached

Transmittal of Appeal Brief

is being deposited with the United States Postal Service "Express Mail Post Office to Addressee"
service under 37 CFR 1.10 on the date indicated above and is addressed to Mail Stop Appeal
Brief-Patents, Commissioner for Patents, P.O. Box 1450, Alexandria, VA 22313-1450.

Express Mail Label No. ED789765505US

PATENT

IN THE UNITED STATES PATENT AND TRADEMARK OFFICE

In re application of: Clark H. Gates, II

Attorney Docket No.: PGATEC-EB

Mail Stop Appeal Brief-Patents
Commissioner for Patents
P.O. Box 1450
Alexandria, VA 22313-1450

TRANSMITTAL OF APPEAL BRIEF (PATENT APPLICATION-37 CFR 41.37)

1. Transmitted herewith is the APPEAL BRIEF in this application with respect to
the Notice of Appeal filed in this case on February 26, 2004, and pursuant to the Examiner's
Notification of Non-Compliance with 37 CFR 1.192(c), which was mailed on December 1, 2004.

2. STATUS OF APPLICANT

This application is on behalf of a small entity.

The statement of small entity status has already been filed.

3 . FEE FOR FILING APPEAL BRIEF

Pursuant to 37 CFR 41.20(b)(2) the fee for filing the Appeal Brief is $250.00. This fee
was paid with the initial filing of the Appeal Brief on August 25, 2004.

4. EXTENSION OF TERM

The proceedings herein are for a patent application, and the provisions of 37 CFR 1.136

Serial No.:

Filed:

For:

Confirmation No.:
Group Art Unit:
Examiner:

10/008,738
11/09/2001

Electrical Box with Recessed Faceplate

6062

3727

Joseph C. Merek

apply.

06/06/2005 HANOI 00000011 10008738

01 FC:2255

1080.00 OP

TRANSMITTAL OF APPEAL BRIEF (PATENT APPLICATION-37 CFR 41 .37) Page 1 of 3

Applicant petitions for an extension of time under 37 CFR LI 36 (fees: 37 CFR
1.17(a)(l)-(5)) for a total of .five months. The requisite fee for a small entity is $1,080.00.

Fee $1,080.00

5. TOTAL FEE DUE
The total fee due is

Extension fee $1,080.00

TOTAL FEE DUE $1,080.00

6. Attached is a check in the sum of .$ 1 ,080.00.

7. In accordance with the Examiner's indicating that the Grouping of Claims was
unclear, the paragraph explaining the difference between claims 15 and 17 has been moved from
the Grouping of Claims to the end of the Summary of Invention.

8. Because the Examiner has objected to the presentation of PCT application no.
PCTUS/2002/035791 and the Search Report for that PCT application, they have been removed;
and the Board is requested to take judicial notice of them.

PCT application no. PCTUS/2002/035791 is virtually identical to the original
Application in the present case. Such PCT application has been published by the World
Intellectual Property Organization as International Publication No. WO 03/043139 A2; the
International Search Report for such PCT application has been published by the World
Intellectual Property Organization as International Publication No. WO 2003/043 139 A3.

Having been published by World Intellectual Property Office and made available on the
web site of the European Patent Office, the PCT Application and the Search Report identified
above as well as the fact that the examiner in the European Patent Office found no lack of clarity
and even found the claims to be patentable in PCT application no. PCTUS/2002/035791, which
is virtually identical to the original Application in the present case, meet the test for adjudicative
facts of which judicial notice is appropriately taken, i.e., what constitutes the PCT Application
and the Search Report as well as the finding by the European patent Examiner are capable of
accurate and ready determination by resort to sources whose accuracy cannot reasonably be
questioned.

As will be evident once judicial notice is taken of the Search Report, it was published
after the final rejection was issued in this case; so, there was no opportunity to present it and the
conclusions of the European patent examiner to the Examiner dealing with the present United
States domestic patent application.

TRANSMITTAL OF APPEAL BRIEF (PATENT APPLICATION-37 CFR 41.37) Page 2 of 3

The finding by the European patent examiner constitutes compelling evidence, the
disregard of which, Appellant respectfully submits, would create serious questions regarding due
process and fundamental fairness. This evidence is, thus necessary and could not have been
presented earlier, thereby complying with the requirements of 37 CFR §41.33.

DATED this 1st day of June, 2005.

Thompson E. Fehr
Attorney for Appellant
Registration No. 31,353

Suite 300

Goldenwest Corporate Center
5025 Adams Avenue
Ogden,Utah 84403

TRANSMITTAL OF APPEAL BRIEF (PATENT APPLICATION-37 CFR 41.37) Page 3 of 3

PATENT

IN THE UNITED STATES PATENT AND TRADEMARK OFFICE

In re application of: Clark H. Gates, II

Serial No.: 10/008,738

Filed: 11/09/2001

For: Electrical Box with Recessed Faceplate

Confirmation No.: 6062

Group Art Unit: 3727

Examiner: Joseph C. Merek
Attorney Docket No.: PGATEC-EB

Mail Stop Appeal Brief-Patents
Commissioner for Patents
P.O. Box 1450
Alexandria, VA 22313-1450

EXPRESS MAIL CERTIFICATE
Express Mail Label No. ED789765505US
Date of Deposit: June 1 , 2005

I hereby certify that the following attached

Appellant's Brief

is being deposited with the United States Postal Service "Express Mail Post Office to Addressee"
service under 37 CFR 1.10 on the date indicated above and is addressed to Mail Stop Appeal
Brief-Patents, Commissioner for Patents, P.O. Box 1450, Alexandria, VA 22313-1450.

Thompson E. Fehr

Express Mail Label No. ED789765505US

PATENT

IN THE UNITED STATES PATENT AND TRADEMARK OFFICE

In re application of: Clark H. Gates, II

Serial No.: 10/008,738

Filed: 11/09/2001

For: Electrical Box with Recessed Faceplate

Confirmation No . : 6062

Group Art Unit: 3727

Examiner: Joseph C. Merek

Attorney Docket No.: PGATEC-EB

Mail Stop Appeal Brief-Patents
Commissioner for Patents
P.O. Box 1450
Alexandria, VA 22313-1450

APPELLANT'S BRIEF (37 CFR 1.192)
This brief is in furtherance of the Notice of Appeal filed in this case on February 26,
2004, and pursuant to the Examiner's Notification of Non-Compliance with 37 CFR 1.192(c),
which was mailed on December 1, 2004.

The fees required under § 41.20 and any required petition for extension of time for filing
this brief and fees therefor are dealt with in the accompanying TRANSMITTAL OF APPEAL
BRIEF.

APPELLANT'S BRIEF (37 CFR 41.37)

Page 1

This brief contains the following items, under headings of the same name and in the order

given:

REAL PARTY IN INTEREST

RELATED APPEALS AND INTERFERENCES

STATUS OF CLAIMS

STATUS OF AMENDMENTS

SUMMARY OF INVENTION

ISSUES

GROUPING OF CLAIMS
ARGUMENT

Rejections under 35 U.S.C. 103
APPENDIX OF CLAIMS INVOLVED IN THE APPEAL

The final page of this brief bears the attorney's signature.

APPELLANT'S BRIEF (37 CFR 41.37)

Page 2

REAL PARTY IN INTEREST

The real party in interest is Clark H. Gates, II.

RELATED APPEALS AND INTERFERENCES
There are no other appeals or interferences known to Appellants or Appellants' legal
representative which will directly affect or be directly affected by or have a bearing on the
Board's decision in the pending appeal.

STATUS OF CLAIMS

Claims 1 through 28 were in the original Application; subject to a requirement for
restriction, claims 1 through 12, 16, 18, 22, 24 through 28 were withdrawn, leaving claims 13
through 15, 17, 19 through 21, and 23 pending.

The claims being appealed are claims 13 through 15, 17, 19 through 21, and 23.

STATUS OF AMENDMENTS
No amendment has been filed subsequent to the final rejection.

SUMMARY OF INVENTION

A basic summary of the invention is given on page 6 of the present application:

The present invention includes ... a new electrical box with a recessed
faceplate ....

. . . [The new electrical box has] a one-piece faceplate; but the new
electrical box is also designed to accommodate a two-part faceplate which permits
adjusting the distance between the outward surface of the electrical
instrumentality installed within the electrical box and the flange at the front of the
faceplate so that, after installation of the box, it can be assured that the flange of
the faceplate will be flush against the wall in which the electrical box has been
installed and that a wall of the faceplate will be flush against the outward surface
of the installed electrical equipment, thereby meeting, in a relatively easy fashion,
the . . . National Electrical Code.

APPELLANT'S BRIEF (37 CFR 41.37)

Page 3

Furthermore, no screws or other components of a releasable fastener not
employing screws are exposed in any of the versions of the electrical box; and
once the electrical instrumentality is installed within the box, there are no
openings in the electrical box.

The preceding is basically accomplished by enlarging both the height and
width of the mouth of the electrical box as well as adding threaded channels to the
sides of the electrical box.

Greater understanding of the invention can be obtained from page 8, line 1 through page

10, line 27 and page 11, line 13 through page 11, line 27:

The Electrical Box with Recessed Faceplate having a one-piece recessed
faceplate but designed to accommodate a two-piece recessed faceplate has, as
illustrated in Figure 1, a box 1 into which a one-piece recessed faceplate 2 is
removably inserted.

The box 1 has an open front or mouth 3 and a closed back 4, although the
rear wall 4 contains the knock-out tabs that are well known in the art for creating
openings through which wiring can pass.

Attached to and projecting generally forward from the rear wall 4 is a
lateral surface 1500 that connects the perimeter 1501 of the rear wall 4 to a first
end 1502 of a connecting wall 1503 which connecting wall 1503 extends
generally outward from, and preferably, perpendicular to, the lateral surface 1500.
Attached to and projecting generally forward from the second end 1504 and from
the sides 1505 of the connecting wall 1503 is the first end 1506 of the front
portion 11. The second end 1507 of the front portion 11 forms the mouth 3 of the
box 1.

The top 5, bottom 6, and sides 7 of the rear portion 8 of the box 1 each
contain a channel 9 extending into the box 1 to accommodate a releasable
fastener, preferably a screw, 10, with each channel 9 extending toward the back 4
of the box 1 and preferably being generally centrally located across the top 5,
bottom 6, and each side 7 of the box 1.

In the preferred embodiment, the box 1 has a rectangular cross section. As
illustrated in Figure 1 and Figure 2, the front portion 11 of the box 1 extends
beyond the top 5 and beyond the bottom 6 of the rear portion 8. A top wall 12
that is preferably generally parallel to the front 3 and the back 4 of the box 1 runs
from the top 5 of the rear portion 8 to the top 13 of the front portion 11 of the box
1 and between the sides 7 of the box 1. Similarly, a bottom wall 16 that is
preferably generally parallel to the front 3 and the back 4 of the box 1 runs from
the bottom 6 of the rear portion 8 to the bottom 17 of the front portion 11 of the

APPELLANT'S BRIEF (37 CFR 41.37)

Page 4

box 1 and between the sides 7 of the box 1. Thus, in the preferred embodiment,
the connecting wall 1503 is comprised of the top wall 12 and the bottom wall 16
and sides 7 which are integrally formed with the sides 7 of the rear portion 8 and
the sides 7 of the front portion 11 of the box 1.

As suggested above, the interior ends 1001 of the channels 9 lie within the
front portion 11 of the box 1; such ends 1001 are preferably covered except for a
threaded aperture 1002 in such ends 1001 and are preferably all substantially
aligned with one another.

The channels 9 and, in the preferred embodiment, the threaded apertures
1002 of the upper and lower channels 9 are used either to attach an electrical
instrumentality 15 or a faceplate to the box 1. Whether the attachment is for an
electrical instrumentality 15 or a faceplate is determined by whether the electrical
instrumentality 15 is intended to be attached to the faceplate or directly to the box
1. This is the same situation as for traditional electrical boxes. If the electrical
instrumentality 15 is intended to be attached directly to the box 1, the threaded
apertures 1002 of the upper and lower channels 9 each accommodate a screw 10
for holding the electrical instrumentality 15 to the box 1, as illustrated in Figure 1
through Figure 4. Otherwise, the threaded apertures 1002 of the upper and lower
channels 9 would be available to retain a screw 10 for holding the faceplate to the
box 1.

Furthermore, as is the case with traditional faceplates, attachment of an
electrical instrumentality 15 to a faceplate can be permanent or releasable, at least
when the faceplate is intended to be attached directly to the box 1.

Retention of faceplates, whether one-piece or two-piece, to electrical
boxes 1 is, as indicated above, preferably done with screws 10, as illustrated in
Figure 1 through Figure 4, since screws tend to pull the faceplate against the
mounting surface. However, the only essential feature is that a releasable fastener
be used to hold the faceplate either directly to the box 1 or indirectly to the box 1
by having the faceplate directly attached, with a releasable fastener, to an
electrical instrumentality 15 that is, itself, directly connected to the box 1 with a
releasable fastener. Thus, for example, any type of snap-fit for a faceplate to the
box 1 or to the electrical instrumentality 15 that is well known in the art may be
employed.

For the embodiments depicted in Figure 1 through Figure 4, the top wall
12 contains an aperture 19 to accommodate a screw 10 that extends through the
top wall 12 outside the box 1. Similarly, the bottom wall 16 contains an aperture
20 to accommodate a screw 10 that extends through the bottom wall 16 outside
the box 1 for the same purpose as the aperture 19. Apertures 19, 20 accommodate
screws 10 which are used to attach faceplates to the type of electrical
instrumentality 15 depicted in Figure 1 through Figure 4, using threaded aperture

APPELLANT'S BRIEF (37 CFR 41.37)

Pag

101 of the electrical instrumentality 15. For different electrical instrumentalities,
however, the number and location of apertures for attaching a faceplate to an
electrical instrumentality 15 depend upon particular electrical instrumentality 15
that is utilized.

The channels 9 on the sides 7 of the box 1 and their associated threaded
apertures 1002 accommodate screws 10 to draw toward the box 1 and retain the
outer portion 24 of a two-piece recessed faceplate 25, as shown in Figure 3.

The one-piece recessed faceplate 2 has a rear wall 26 containing one or
more instrumentality apertures 27 to accommodate the electrical instrumentality
15. Attached to and projecting generally forward from the rear wall 26 is an
interior surface 1400 that connects the perimeter 1401 of the rear wall 26 to a
flange 33. The rear wall 26 has substantially the same shape as does the cross
section of the front portion 11 of the box 1. In the case of a box 1 having a
traditionally rectangular cross section, as depicted in Figure 1 and Figure 2, the
interior surface 1400 comprises a top 27, bottom 28, and two sides 29 attached to
one another so as to form a four-sided object. To the front 30 of the top 27, the
front 31 of the bottom 28, and the front 32 of the two sides 29 is attached a flange
33, the back side 34 of which flange 33 is designed to seat against the mounting
surface. The faceplate 2 has, in comparison to the box 1, dimensions such that the
flange 33 extends from the interior surface 1400 of the box 1 to a position
laterally beyond the front of the mouth 3.

The rear wall 26 is also adapted to accommodate a releasable fastener for
fastening the faceplate 2 directly or indirectly, through the electrical
instrumentality 15, to the box 1. Preferably, this consists of one or more apertures
1003 to accommodate screws 10.

Thus, the Electrical Box with Recessed Faceplate having a one-piece
recessed faceplate has a box 1 adapted to accommodate a two-piece recessed
faceplate 25, has no screws 10 or analogous components of another type of
releasable fastener exposed within the box 1 behind the installed electrical
equipment 15, and possesses no substantial gaps or apertures other than those
designed to accommodate the installed electrical equipment 15 and screws 10 or
components of another type of releasable fastener. The description to this point
has concentrated upon the embodiments depicted in Figure 1 through Figure 4.
Any embodiment utilizing the inventive features described in the first sentence of
this paragraph would, however, fall within the scope of this invention, e.g., the
cross section of the box 1 need not necessarily be rectangular.

The outer portion 24 of the two-piece recessed faceplate 25 is constructed
just as is the one-piece recessed faceplate 2 except that such outer portion 24 does
not have a rear wall 26 but instead has attached to each side 29 a longitudinal

APPELLANT'S BRIEF (37 CFR 41.37)

Page 6

projection 201 extending inward having an aperture 44 to accommodate a screw
10 or other releasable fastener that will draw toward the box 1, and retain, the
outer portion 24 of the two-piece recessed faceplate 25. This pulls the back side
34 of the flange 33 against the mounting surface.

The inner portion 45 of the two-piece recessed faceplate 25 is constructed
the same as the one-piece recessed faceplate 2 except that it does not have the
flange 33 but does possess the number of apertures 46, two apertures 46 in the
case of screws 10, to accommodate the releasable fasteners that draw the outer
portion 24 of the two-piece recessed faceplate 25 to the box 1.

The top 27, bottom 28, and two sides 29 for the outer portion 24 of the
two-piece recessed faceplate 25 are sized so that they will slide along the inside of
the top 27, bottom 28, and two sides 29, respectively, of the inner portion 45 in
order that there will substantially be no gaps between these corresponding
features.

Claims 15 and 17 depend upon claim 13, and claims 21 and 23 depend upon claim 19.
The difference between claim 13 and claim 19 is simply that in claim 19 accommodation is made
for a fastener to attach the faceplate directly to the box whereas in claim 13 accommodation is
made for releasable fasteners indirectly to attach the faceplate to the box, through the electrical
instrumentality. (In each claim accommodation is made for a fastener to attach the electrical
instrumentality to the faceplate.)

ISSUES

There are two issues in this appeal.

The first issue is whether or not claims 13 through 15, 17, 19 through 21, and 23 contain
subject matter which was described in the specification in such a way as to enable one skilled in
the art to which it pertains, or with which it is most nearly connected, to make and/or use the
invention (35 U.S.C. § 1 12, first paragraph).

APPELLANT'S BRIEF (37 CFR 41.37)

Page 7

The second issue is whether or not claims 13 through 15, 17, 19 through 21, and 23
particularly point out and distinctly claim the subject matter which applicant regards as his
invention (35 U.S.C. § 1 12, second paragraph).

GROUPING OF CLAIMS
Appellant does not contend that, for each ground of rejection being contested, the claims
of the group do not stand or fall together.

ARGUMENT

Rejections under 35 U.S.C. § 112, First Paragraph

The Examiner has stated:

Claims 13-15, 17, 19-21, and 23 are rejected under 35 U.S.C. 112, first
paragraph, as containing subject matter which was not described in the
specification in such a way as to enable one skilled in the art to which it pertains,
or with which it is most nearly connected, to make and/or use the invention.
Regarding claims 13 and 19, the claims set forth a connecting wall. However, the
drawings show to [sic] separate connecting walls one on each side of the rear
wall. The claims state that the connecting wall has a first end that is attached to
the lateral surface and projects generally outward from the lateral surface. The
second connecting wall is not specified. The claim does not set forth to what part
of the lateral surface is attached. The claim sets for that a front portion is attached
and projecting generally forward from the sides and the second end of the
connecting wall. It is not clear how the front portion is connected to only the one
connecting wall. Moreover, the first end of the front portion only requires three
sides connected to the connecting wall. It is not clear how the front portion is
attached to the connecting wall on three surfaces. The remaining claims are
included since they stem from the rejected claims. . . .

Appellant respectfully asserts that the Examiner, in saying that the drawings show two
separate connecting walls, has made an error that one of ordinary skill in the art would not make.
Lines 7 through 26 on page 8 of the Application describe the connecting wall:

APPELLANT'S BRIEF (37 CFR 41.37)

Page 8

Attached to and projecting generally forward from the rear wall 4 is a
lateral surface 1500 that connects the perimeter 1501 of the rear wall 4 to a first
end 1502 of a connecting wall 1503 which connecting wall 1503 extends
generally outward from, and preferably, perpendicular to, the lateral surface 1500.
Attached to and projecting generally forward from the second end 1504 and from
the sides 1505 of the connecting wall 1503 is the first end 1506 of the front
portion 11. The second end 1507 of the front portion 11 forms the mouth 3 of the
box 1.

The top 5, bottom 6, and sides 7 of the rear portion 8 of the box 1 each
contain a channel 9 extending into the box 1 to accommodate a releasable
fastener, preferably a screw, 10, with each channel 9 extending toward the back 4
of the box 1 and preferably being generally centrally located across the top 5,
bottom 6, and each side 7 of the box 1.

In the preferred embodiment, the box 1 has a rectangular cross section. As
illustrated in Figure 1 and Figure 2, the front portion 11 of the box 1 extends
beyond the top 5 and beyond the bottom 6 of the rear portion 8. A top wall 12
that is preferably generally parallel to the front 3 and the back 4 of the box 1 runs
from the top 5 of the rear portion 8 to the top 13 of the front portion 11 of the box
1 and between the sides 7 of the box 1. Similarly, a bottom wall 16 that is
preferably generally parallel to the front 3 and the back 4 of the box 1 runs from
the bottom 6 of the rear portion 8 to the bottom 17 of the front, portion 11 of the
box 1 and between the sides 7 of the box 1. Thus, in the preferred embodiment,
the connecting wall 1503 is comprised of the top wall 12 and the bottom wall 16
and sides 7 which are integrally formed with the sides 7 of the rear portion 8 and
the sides 7 of the front portion 11 of the box 1.

Hence, there is only one connecting wall 1503, even though it includes a top wall 12 and
a bottom wall 16. (It may be a slight error that is rectifiable without introducing new matter, to
have, in the last paragraph of the immediately preceding quotation, referred to sides 7 of the
connecting wall 1503, instead of sides 1505 of the connecting wall 1503, although Appellant
believes this was correct since the sides of the connecting wall are identified as 1505 when the
connecting wall is being considered alone and are identified as 7 when they are considered as an
integral part of the entire side of the box 1, encompassing the rear portion, the connecting wall,
and the front portion of the box 1.) All of the features are shown in Figure 3. And, in an
attempt to clarify this situation for the Examiner beyond what Appellant respectfully believes

APPELLANT'S BRIEF (37 CFR 41.37)

Page 9

would be required for one of ordinary skill in the art, Appellant amended the specification,

amended claims 13 and 19, and added Figure 7.

The amendment to the specification was as follows:

Attached to and projecting generally forward from the rear wall 4 is a
lateral surface 1500 that connects the perimeter 1501 of the rear wall 4 to a first
end 1502 of a connecting wall 1503 which connecting wall 1503 extends
generally outward from, and preferably, perpendicular to, the lateral surface 1500.
A first end 4050 of the lateral surface 1500 is connected to the perimeter 1501 of
the rear wall 4, and a second end 4060 of the lateral surface 1500 is connected to
the first end 1502 of the connecting wall 1503. Attached to and projecting
generally forward from the second end 1504 and from the sides 1505 (At least
when the box 1 has a rectangular shape, the portions of the second end 1504 of
the connecting wall 1503 that is in the same plane as the sides 7 of the box 1 are
termed "sides" 1505.) of the connecting wall 1503 is the first end 1506 of the
front portion 11. The second end 1507 of the front portion 11 forms the mouth 3
of the box 1.

Similarly, claims 13 and 19 were amended as follows:

Claim 13 (currently amended): An Electrical Box with Recessed Faceplate, which
comprises:

a faceplate comprising:

an outer portion comprising:
a flange;

an interior surface having sides, being attached to the flange, and
projecting generally rearward from the flange; and

a longitudinal projection extending inward from each side of the
interior surface and having a means for accommodating a releasable
fastener; and

an inner portion comprising:

APPELLANT'S BRIEF (37 CFR 41.37)

Page 10

a rear wall with a perimeter and a cross-sectional shape, the rear
wall containing one or more instrumentality apertures and having a means
for accommodating a releasable fastener for attaching said faceplate to an
electrical instrumentality as well as a means for accommodating a second
releasable fastener; and

an interior surface projecting generally forward from the rear wall
and connected to the rear wall, with the dimensions of the interior surface
of the inner portion being such that the interior surface of the inner portion
will fit into and slide along the interior surface of the outer portion with
substantially no gaps between such interior surfaces; and
a box comprising:

a rear wall having a perimeter;

a lateral surface , having a first end attached to and projecting generally
forward from the perimeter of the rear wall and having a top containing a channel,
a bottom containing a channel, and sides each containing a channel, with each
channel having an interior end;

a connecting wall having a first end attached to a second end of the lateral
surface, the connecting wall having sides and a second end and said connecting
wall extending generally outward from the lateral surface; and

a front portion having a first end attached to and projecting generally
forward from the sides and the second end of the connecting wall, the front
portion containing the interior ends of the channels, the front portion having a
second end forming an open mouth, the front portion having substantially the

APPELLANT'S BRIEF (37 CFR 41.37)

Page 1 1

same cross-sectional shape as does the rear wall of said faceplate, and the front
portion having dimensions such that the flange of the faceplate extends from the
interior surface to a position laterally beyond the front of the mouth;

a means for accommodating a releasable fastener for attaching said box to
an electrical instrumentality; and

a means for accommodating a releasable fastener for drawing toward said
box and releasably retaining the outer portion of said faceplate.
Claim 19 (currently amended): An Electrical Box with Recessed Faceplate, which
comprises:

a faceplate comprising:

an outer portion comprising:
a flange;

an interior surface having sides, being attached to the flange, and
projecting generally rearward from the flange; and

a longitudinal projection extending inward from each side of the
interior surface and having a means for accommodating a releasable
fastener; and

an inner portion comprising:

a rear wall with a perimeter and a cross-sectional shape, the rear
wall containing one or more instrumentality apertures and having a means
for accommodating a fastener for attaching said faceplate to an electrical
instrumentality as well as a means for accommodating a releasable
fastener; and

APPELLANT'S BRIEF (37 CFR 41.37)

Page 12

an interior surface projecting generally forward from the rear wall
and connected to the rear wall, with the dimensions of the interior surface
of the inner portion being such that the interior surface of the inner portion
will fit into and slide along the interior surface of the outer portion with
substantially no gaps between such interior surfaces; and
a box comprising:

a rear wall having a perimeter;

a lateral surface , having a first end attached to and projecting generally
forward from the perimeter of the rear wall and having a top containing a channel,
a bottom containing a channel, and sides each containing a channel, with each
channel having an interior end;

a connecting wall having a first end attached to a second end of the lateral
surface, the connecting wall having sides and a second end and said connecting
wall extending generally outward from the lateral surface; and

a front portion having a first end attached to and projecting generally
forward from the sides and the second end of the connecting wall, the front
portion containing the interior ends of the channels, the front portion having a
second end forming an open mouth, the front portion having substantially the
same cross-sectional shape as does the rear wall of said faceplate, and the front
portion having dimensions such that the flange of the faceplate extends from the
interior surface to a position laterally beyond the front of the mouth;

a means for accommodating a releasable fastener for attaching said box to
said faceplate; and

APPELLANT'S BRIEF (37 CFR 41.37)

Page 13

a means for accommodating a releasable fastener for drawing toward said

box and releasably retaining the outer portion of said faceplate.

And Figure 7 is shown in Attachment 1 hereto.

The Examiner has further declared:

. . . Regarding claim 13 and 19, there is no support for the "lateral surface
having a first end" or the "connecting wall having a first end attached to a second
end of the lateral surface". The lateral surface was never shown as having ends.
Moreover, the lateral surface having first and second ends does not make sense in
light of the original drawings, claims, and disclosure. This is a new matter
rejection. The remaining claims are included since they stem from rejected
claims.

As noted above, lines 7 through 26 on page 8 of the Application describe the lateral
surface:

Attached to and projecting generally forward from the rear wall 4 is a
lateral surface 1500 that connects the perimeter 1501 of the rear wall 4 to a first
end 1502 of a connecting wall 1503 which connecting wall 1503 extends
generally outward from, and preferably, perpendicular to, the lateral surface 1500.
Attached to and projecting generally forward from the second end 1504 and from
the sides 1505 of the connecting wall 1503 is the first end 1506 of the front
portion 11. The second end 1507 of the front portion 11 forms the mouth 3 of the
box 1.

Furthermore, the lateral surface 1500 is depicted in Figures 1 through 4. It is obvious
both from the language quoted immediately above and Figures 1 through 4 that the lateral
surface 1500 connects the rear wall 4 to a first end 1502 of a connecting wall 1503. And it is
apparent from Figures 1 through 4 that one extremity of the lateral surface 1500 is attached to the
perimeter 1501 of the rear wall 4 while an opposite extremity of the lateral surface 1500 is
connected to a first end 1502 of a connecting wall 1503. Although the specification did not
originally term the one extremity a "first end" and the opposite extremity a "second end," it
would be logical to do so since the open portions of an otherwise closed surface such as the

APPELLANT'S BRIEF (37 CFR 41.37)

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lateral surface 1500 are generally called "ends." To add this logical nomenclature is, Appellant
respectfully suggest, not tantamount to the introduction of new matter.

The preceding furthermore addresses the Examiner's objection to the specification, which
states, "The added material which is not supported by the original disclosure is as follows: There
is no support for the 4 a second end of the lateral surface is connected to a first end of the

connecting wall' or 'at least when the box has a rectangular shape '. And the quotation

above from lines 7 through 26 on page 8 of the Application shows that the disclosure has always
indicated that, in the preferred embodiment, the box 1 has a rectangular cross section.

Notably, the Examiner comments, "The only way the original disclosure make sense are
to view the connecting wall as now shown by applicant." Certainly, one expects a person of
ordinary skill in the field to interpret a disclosure in the only way it makes sense. Therefore, to
one of ordinary skill in the field, the connecting wall is as it is shown in Figure 7 — a fact which
precludes violation of any paragraph in 35 U.S.C. § 1 12.

The Examiner continues, "The second change to the specification implies that the
connecting wall may not be in the same plane for other shapes. There is no support for the
connecting wall being out of the plane of the lateral surface."

The language in question is "At least when the box 1 has a rectangular shape, the portions
of the second end 1504 of the connecting wall 1503 that is in the same plane as the sides 7 of the
box 1 are termed 'sides' 1505." This defines the term "sides" for use in the Application,
especially in the claims. Again in the preceding quotation from lines 7 through 26 on page 8 of
the Application, one reads, "... a connecting wall 1503 which connecting wall 1503 extends
generally outward from, and preferably, perpendicular to, the lateral surface 1500." Although
portions of the second end 1504 of the connecting wall 1503 may be in the same plane as the

APPELLANT'S BRIEF (37 CFR 41.37)

Page 15

sides 7 of the box 1, the overall connecting wall 1503 is not in the same plane as the lateral
surface 1500.

In disapproving the proposed drawing correction filed on June 11, 2003, the Examiner
has stated:

. . . The original disclosure does not support the showing of the
connecting wall which was disclosed as including the wall segments . . . [1505]
on either side of the box included the thin wall structure between the two sections
or segments as seen in Proposed Fig. 7. It is clear that the box has this structure in
the sidewalls. However, it is not clear that applicant had intended to show the
connecting wall to include the thin sections 1502 as seen in proposed Fig. 7.

That the original disclosure does, indeed, provide such support is, Appellant respectfully

believes, evident from lines 24 through 26 on page 8 of the Application:

. . . Thus, in the preferred embodiment, the connecting wall 1503 is
comprised of the top wall 12 and the bottom wall 16 and sides 7 which are
integrally formed with the sides 7 of the rear portion 8 and the sides 7 of the front
portion 11 of the box 1.

Applicant respectfully suggests that the foregoing demonstrates that the claims in
question meet the requirements of 35 U.S.C. § 1 12, first paragraph.

Applicant also believes that further evidence for this fact arises from the fact that the
examiner in the European Patent Office found no lack of clarity and even found the claims to be
patentable in PCT application no. PCTUS/2002/035791, which is virtually identical to the
original Application in the present case. Such PCT application has been published by the World
Intellectual Property Organization as International Publication No. WO 03/043139 A2; the
International Search Report for such PCT application has been published by the World
Intellectual Property Organization as International Publication No. WO 2003/043139 A3.

A copy of the PCT application had been included herewith as Attachment 2; a copy of the
International Search Report, as Attachment 3. Without providing any citation, the Examiner has

APPELLANT'S BRIEF (37 CFR 41 .37)

Page 16

required Appellant to remove these two attachments, claiming that they are evidence that the
Examiner had not had the opportunity to review prior to appeal.

Appellant, therefore, requests the Board to take judicial notice of these two documents
and the fact that the European patent examiner found no lack of clarity and even found the
claims to be patentable. If the Board directs, Appellant will provide new copes of these
documents. They can also, of course, be found on the web site of the European Patent Office
(http ://ep .espacenet. com) .

Although 37 CFR § 1.152 only explicitly makes the Federal Rules of Evidence applicable
to contested cases, a review by Appellant of Board decisions on Westlaw demonstrates that the
Board takes judicial notice in appeals.

Rule 201 in the Federal Rules of Evidence provides as follows:

Rule 201. Judicial Notice of Adjudicative Facts

(a) Scope of rule.

This rule governs only judicial notice of adjudicative facts.

(b) Kinds of facts.

A judicially noticed fact must be one not subject to reasonable dispute in that it is
either (1) generally known within the territorial jurisdiction of the trial court or (2)
capable of accurate and ready determination by resort to sources whose accuracy
cannot reasonably be questioned.

(c) When discretionary.

A court may take judicial notice, whether requested or not.

(d) When mandatory.

A court shall take judicial notice if requested by a party and supplied with the
necessary information.

APPELLANT'S BRIEF (37 CFR 41.37)

Page 17

(e) Opportunity to be heard.

A party is entitled upon timely request to an opportunity to be heard as to the
propriety of taking judicial notice and the tenor of the matter noticed. In the
absence of prior notification, the request may be made after judicial notice has
been taken.

(f) Time of taking notice.

Judicial notice may be taken at any stage of the proceeding.

(g) Instructing jury.

In a civil action or proceeding, the court shall instruct the jury to accept as
conclusive any fact judicially noticed. In a criminal case, the court shall instruct
the jury that it may, but is not required to, accept as conclusive any fact judicially
noticed.

Having been published by World Intellectual Property Office and made available on the
web site of the European Patent Office, the PCT Application and the Search Report identified
above as well as the fact that the examiner in the European Patent Office found no lack of clarity
and even found the claims to be patentable in PCT application no. PCTUS/2002/035791, which
is virtually identical to the original Application in the present case, meet the test for adjudicative
facts of which judicial notice is appropriately taken, i.e., what constitutes the PCT Application
and the Search Report as well as the finding by the European patent Examiner are capable of
accurate and ready determination by resort to sources whose accuracy cannot reasonably be
questioned.

As will be evident once judicial notice is taken of the Search Report, it was published
after the final rejection was issued in this case; so, there was no opportunity to present it and the
conclusions of the European patent examiner to the Examiner dealing with the present United
States domestic patent application.

APPELLANT'S BRIEF (37 CFR 41.37)

Page 18

The finding by the European patent examiner constitutes compelling evidence, the
disregard of which, Appellant respectfully submits, would create serious questions regarding due
process and fundamental fairness. This evidence is, thus necessary and could not have been
presented earlier, thereby complying with the requirements of 37 CFR § 41.33.

Rejections under 35 U.S.C. § 112, Second Paragraph
The Examiner's rejections under 35 U.S.C. § 112, second paragraph are identical to his

rejections under 35 U.S.C. § 1 12 and have, consequently, been addressed above.

Appellant respectfully requests that the Board reverse the decision of the Examiner and

rule that claims 13 through 15, 17, 19 through 21, and 23 comply with the requirements of both

the first and second paragraphs in 35 U.S.C. § 1 12.

APPELLANT'S BRIEF (37 CFR 41.37)

Page 19

APPENDIX
OF

CLAIMS INVOLVED IN THE APPEAL
The claims are as follows:

1 Claim 13 (currently amended): An Electrical Box with Recessed Faceplate, which

2 comprises:

3 a faceplate comprising:

4 an outer portion comprising:

5 a flange;

6 an interior surface having sides, being attached to the flange, and

7 projecting generally rearward from the flange; and

8 a longitudinal projection extending inward from each side of the

9 interior surface and having a means for accommodating a releasable

10 fastener; and

11 an inner portion comprising:

12 a rear wall with a perimeter and a cross-sectional shape, the rear

13 wall containing one or more instrumentality apertures and having a means

14 for accommodating a releasable fastener for attaching said faceplate to an

15 electrical instrumentality as well as a means for accommodating a second

16 releasable fastener; and

17 an interior surface projecting generally forward from the rear wall

1 8 and connected to the rear wall, with the dimensions of the interior surface

1 9 of the inner portion being such that the interior surface of the inner portion

20 will fit into and slide along the interior surface of the outer portion with

21 substantially no gaps between such interior surfaces; and

22 a box comprising:

23 a rear wall having a perimeter;

24 a lateral surface , having a first end attached to and projecting generally

25 forward from the perimeter of the rear wall and having a top containing a channel,

APPELLANT'S BRIEF (37 CFR 41.37)

Page 20

26 a bottom containing a channel, and sides each containing a channel, with each

27 channel having an interior end;

28 a connecting wall having a first end attached to a second end of the lateral

29 surface, the connecting wall having sides and a second end and said connecting

30 wall extending generally outward from the lateral surface; and

31 a front portion having a first end attached to and projecting generally

32 forward from the sides and the second end of the connecting wall, the front

33 portion containing the interior ends of the channels, the front portion having a

34 second end forming an open mouth, the front portion having substantially the

35 same cross-sectional shape as does the rear wall of said faceplate, and the front

36 portion having dimensions such that the flange of the faceplate extends from the

37 interior surface to a position laterally beyond the front of the mouth;

38 a means for accommodating a releasable fastener for attaching said box to

39 an electrical instrumentality; and

40 a means for accommodating a releasable fastener for drawing toward said

41 box and releasably retaining the outer portion of said faceplate.

1 Claim 14 (original): The Electrical Box with Recessed Faceplate as recited in claim 13,

2 wherein:

3 the means for accommodating a releasable fastener in the longitudinal projection

4 is an aperture when the releasable fastener accommodated thereby is a screw;

5 the means for accommodating a releasable fastener for attaching said faceplate to

6 an electrical instrumentality which means comprises part of the faceplate is one or more

7 apertures in the faceplate as well as one or more apertures in the connecting wall when

8 the fastener for attaching said faceplate to an electrical instrumentality is a screw;

9 the means for accommodating a releasable fastener for attaching said box to an

10 electrical instrumentality is a covered interior end having a threaded aperture for the

1 1 channel on the top of the lateral surface of the box and a covered interior end having a

12 threaded aperture for the channel on the bottom of the lateral surface of the box;

13 the means for accommodating a releasable fastener for drawing toward said box

14 and releasably retaining the outer portion of said faceplate is a covered interior end

APPELLANT'S BRIEF (37 CFR 41.37)

Page 21

15 having a threaded aperture for the channels on the sides of the lateral surface of the box

16 so that said threaded aperture can receive screws which pass through the apertures in the

17 longitudinal projections; and

18 the means for accommodating a second releasable fastener in the rear wall of the

1 9 faceplate is an aperture.

1 Claim 15 (original): The Electrical Box with Recessed Faceplate as recited in claim 14,

2 wherein:

3 said faceplate and said box each have a rectangular cross section.

1 Claim 17 (original): The Electrical Box with Recessed Faceplate as recited in claim 13,

2 wherein:

3 said faceplate and said box each have a rectangular cross section.

1 Claim 19 (currently amended): An Electrical Box with Recessed Faceplate, which

2 comprises:

3 a faceplate comprising:

4 an outer portion comprising:

5 a flange;

6 an interior surface having sides, being attached to the flange, and

7 projecting generally rearward from the flange; and

8 a longitudinal projection extending inward from each side of the

9 interior surface and having a means for accommodating a releasable

10 fastener; and

1 1 an inner portion comprising:

12 a rear wall with a perimeter and a cross-sectional shape, the rear

13 wall containing one or more instrumentality apertures and having a means

14 for accommodating a fastener for attaching said faceplate to an electrical

15 instrumentality as well as a means for accommodating a releasable

16 fastener; and

17 an interior surface projecting generally forward from the rear wall

1 8 and connected to the rear wall, with the dimensions of the interior surface

1 9 of the inner portion being such that the interior surface of the inner portion

APPELLANT'S BRIEF (37 CFR 41.37)

Page 22

20 will fit into and slide along the interior surface of the outer portion with

21 substantially no gaps between such interior surfaces; and

22 a box comprising:

23 a rear wall having a perimeter;

24 a lateral surface , having a first end attached to and projecting generally

25 forward from the perimeter of the rear wall and having a top containing a channel,

26 a bottom containing a channel, and sides each containing a channel, with each

27 channel having an interior end;

28 a connecting wall having a first end attached to a second end of the lateral

29 surface, the connecting wall having sides and a second end and said connecting

30 wall extending generally outward from the lateral surface; and

31 a front portion having a first end attached to and projecting generally

32 forward from the sides and the second end of the connecting wall, the front

33 portion containing the interior ends of the channels, the front portion having a

34 second end forming an open mouth, the front portion having substantially the

35 same cross-sectional shape as does the rear wall of said faceplate, and the front

36 portion having dimensions such that the flange of the faceplate extends from the

37 interior surface to a position laterally beyond the front of the mouth;

38 a means for accommodating a releasable fastener for attaching said box to

39 said faceplate; and

40 a means for accommodating a releasable fastener for drawing toward said

41 box and releasably retaining the outer portion of said faceplate.

1 Claim 20 (original): The Electrical Box with Recessed Faceplate as recited in claim 19,

2 wherein:

3 the means for accommodating a releasable fastener in the longitudinal projection

4 is an aperture when the releasable fastener accommodated thereby is a screw;

5 the means for accommodating a releasable fastener in the rear wall of the

6 faceplate is one or more apertures in the rear wall of the faceplate when the releasable

7 fastener is a screw; and

APPELLANT'S BRIEF (37 CFR 41.37)

Page 23

8 the means for accommodating a releasable fastener for attaching said box to said

9 faceplate is a covered interior end having a threaded aperture for the channel on the top of

10 the lateral surface of the box and a covered interior end having a threaded aperture for the

1 1 channel on the bottom of the lateral surface of the box when the releasable fastener is a

12 screw that will pass through the aperture in the rear wall of the faceplate; and

13 the means for accommodating a releasable fastener for drawing toward said box

14 and releasably retaining the outer portion of said faceplate is a covered interior end

15 having a threaded aperture for the channels on the sides of the lateral surface of the box

16 so that said threaded aperture can receive screws which pass through the apertures in the

1 7 longitudinal proj ections.

1 Claim 21 (original): The Electrical Box with Recessed Faceplate as recited in claim 20,

2 wherein:

3 said faceplate and said box each have a rectangular cross section.

1 Claim 23 (original): The Electrical Box with Recessed Faceplate as recited in claim 19,

2 wherein:

3 said faceplate and said box each have a rectangular cross section.

APPELLANT'S BRIEF (37 CFR 41.37)

Page 24

Attachment 1

Figure 7

DATED this 1 st day of June, 2005.

Registration No. 31,353

Telephone No.: (801) 393-6292

ax

tpson E. !

Thompson E. Fehr
Attorney for Appellant

Suite 300

Goldenwest Corporate Center
5025 Adams Avenue
Ogden,Utah 84403